Passing Off vs Trademark Infringement: What’s The Difference?

by Mai Sarkissian

July 27, 2021
Intellectual Property, Legal guides, Others

Want to know what the difference is between passing off vs trademark infringement? Well, both passing off and trademark infringement are two different types of trademark protection for business owners or individuals. However, both types of protection operate distinctly from one another and have different legal origins. This articles discusses their similarities and differences.

What is a Trademark?

Before discussing what passing off and trademark infringement are, it is important to understand what a trademark is.

A trademark is a unique way to identify your brand, product or service. A trademark basically sets your product or service apart from other products and services. Trademarks can take many forms, such as words, phrases, letters, numbers, logos, pictures, any distinctive aspect of packaging or signage, sounds or jingles.

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Now, some trademarks are registered and some are unregistered. Both registered and unregistered trademarks work to protect your brand from the illegal use of others. However, the protection they afford and enforcement of that protection is very different. This is where the distinction between passing off vs trademark infringement becomes important.

Examples of well-known trademarks are:

McDonalds Golden Arches, McDonalds “I’m lovin it” slogan, Coca-Cola bottle shape, graphic representation of Coca-Cola name, the Nike swoosh symbol, Apple logo etc.

Passing Off vs Trademark Infringement: What’s the difference?

So, we know that trademarks can be either: (1) registered or (2) unregistered. The type of trademark you hold, registered or unregistered, relates directly to the type of legal action you may take if someone illegally uses your trademark. Registering a trademark allows trademark owners to securely protect their mark under the Trade Marks Act 1995 (Cth) and therefore enables them to sue for trademark infringement. If you are thinking about registering your trademark, our team can help make the process simple and efficient. However, protection is still available for unregistered trademarks. If your trademark is unregistered, the common law action of passing off may be available.

More simply:

If you have registered your trade mark – the legal remedy for infringement is trademark infringement under the Trade Marks Act.
If you have not registered your trade mark – the legal remedy for infringement is common law passing off.

Passing Off

‘Passing off’ is a common law remedy. This means that it is a remedy made by the courts, rather than legislation. ‘Passing off’ prevents the illegal use of your unregistered trademark. More specifically, the passing off remedy prevents businesses and individuals from ‘passing off’ their products as your products. Basically, it protects business owners from other businesses who sell products that mimimic or claim to be the same products as the product your business sells.

The 3 elements that must be established to prove some company has “passed off” their products as your products, are:

Your company must have acted in good will,
The misrepresentation was performed by another company, and,
The damages suffered by your company were a result of “passing off” by another company.

For further information on proving passing off, see our article “What is Passing Off?“.

Trademark Infringement

Trademark infringement is a statutory remedy. This means it is a legal remedy created by legislation. Only registered trademark owners have access to actions for trademark infringement. Specifically, trademark infringement protects any and all illegal use of your registered trademark. This cause of action in embedded into section 120 of the Trade Marks Act. Under section 120, trademark infringement occurs when:

There is a registered trademark,
There is an infringing trademark that is “substantially identical or deceptively similar” to your registered trademark, and,
The infringing trademark is on an identical or similar products/services as your registered trademark.

You must prove each of these elements to make a valid action for trademark infringement. To learn more about proving each element of trademark infringement, see “A Guide To Trademark Infringement”.

Key Takeaways

Passing off and trademark infringement are both actions that trademark owners can take to enforce their intellectual property right. The major difference between passing off and trademark infringement is when they are available to trademark owners. If you have a registered trademark, the legal cause of action against the infringer is trademark infringement. However, if you have an unregistered trademark, the legal cause of action against the infringer is passing off.